I agree that selecting a title of your film /script is not an easy job. You apply immense caution while choosing a title of your script/film. You want a title that captures not only the essence of the film but also arouses the interest of the public in your work. Bingo! After so many head bangs you found a suitable title. What next? You shall like to protect that and ensure other person does not use the identical or similar title. Can you legally restrain other person from using your title? The answer is not very simple! Let’s explore this interesting question with a series of related questions.
Whether copyright laws protect the title of film/script/book or any kind of title?
The straight and load answer is a No. Copyright does not protect the title of work even if it is very creative and innovative. The reason is very simple. The ambit of copyright protection is limited to the original literary, dramatic, musical, and artistic works, cinematographic films, and sound recordings. Hence, it protects the creative expression of work as a whole and not the title in exclusion.
What is the legal validity of the title registered with a producer’s association?
Several producers’ associations provide the facility of title registration to their members. No doubt, it is a good industry practice. An association ensures that it does not allow the registration of a new title that is identical to an already registered titled with that association. However, the registration of title with an association does not make you a legal owner of that title. An association can intervene in any title-related dispute between its members. It can help the members to reach an amicable solution through mediation. However, a person cannot get that registration enforced in a court of law. Hence, this does not offer holistic protection to your title.
Trademark protection of a title
Consequently, filmmakers/screenwriters have to resort to protection provided under the Trademark Act, 1999. I know what you must be thinking! Does Trademark Act provide complete protection to a title? Can a person restrain another person from using her title registered under the Trademark Act? Ummm! The answer my friend is not blowin' in the wind! In fact, it depends. Trademark Act protects the title of a film. However, there are several conditions to be satisfied to receive protection. Let us understand the ambit of protection under trademark law with the legal precedents given by our Honorable Courts. Honorable Delhi High Court has elaborated this issue in detail in the case of Kanungo Media (P) Ltd. vs RGV Film Factory & Ors. 2017 (Nishabd case).
Fact of the case:
The plaintiffs were the producer of a Bengali documentary film by the title of Nisshabd. The film was not released commercially due to a shortage of funds. However, it was screened in various film festivals and also won a few awards. The plaintiffs contended that the film had earned a high reputation and secondary meaning among the public at large. The defendants used the same title for their upcoming Hindi feature film with a different story and starring big stars. Defendants had promoted their film on a mass scale. The Plaintiff approached the Court praying to restrain the Defendants from using the title “Nishabd”.
Issues before the Court:
a) The Plaintiff has used the word “Nisshabd” as the title of a feature film before the Defendants has used. Whether it has acquired such uniqueness and distinctiveness among the user of the said word “Nisshabd”?
b) Whether the defendant is passing off (infringing right of the Complainant) by using the word “Nisshabd” or any other deceptively similar word to confuse the film enthusiasts, if so, to what effect?
Analysis of the Court:
The Court held that the protection of the title of a film is covered under Trademark Law and competition law. There are two types of the title (a) the title of the series of work (b) the title of the single work. The title of the series of work enjoys the protection as a conventional trademark. Hence, there is substantial trademark protection to the title of the films having multiple sequel/prequel like Hera pheri, Fir Hera Pheri, Munna Bhai-MBBS, Lage Raho Munna Bhai, Golmal, Golmal Returns, Harry Porters etc. All films in a series are coming from a single source. Therefore, they have created a unique brand value among the people.
The Court further held that the title of a single work does not enjoy the same protection as a series title. A title of a single work has to acquire the secondary meaning to enjoy the trademark protection like a series title. The secondary meaning means the title is capable of connecting itself with the particular work or source. The test of secondary meaning for titles is determining whether the title is linked with a single source of literary work among the significant number of people. The Court further observed that there can be mainly four kinds of evidence to establish the secondary meaning of a title namely;
a) The length and continuity of use of the title
b) the extent of advertising and promotion and the amount of money spent on the same
c) the sales figures on purchases plus the number of people who bought or viewed the work
d) the closeness of the geographical and product markets of the plaintiff and defendants
The Court observed that the plaintiff film was a documentary film in Bengali whose viewership is substantially less than a Hindi film. Further, the film festivals where the plaintiff film had achieved critical acclaim also have a limited viewership. Hence, the plaintiff’s film has not obtained the secondary meaning to receive protection under the trademark.
In this case, none of the party had registered its title under the Trademark Act. Now, tell me, if the judgment had been any different in case the Plaintiffs would have registered/applied for registration their title under Trademark Act? This is a very interesting scenario. As many of you might be thinking that you can secure your title by registering the same under the Trade Mark Act. However, let me warn you that it is not that simple. However, right now, I am leaving you with this interesting question.
I shall address it in the second part of this article.
So, stay tuned!